Ex parte Mauer

Board of Patent Appeals and Interferences

Aug 23, 1999

08478070 (B.P.A.I. Aug. 23, 1999)

Application for patent filed June 7, 1995. According1
to appellant, the application is a division of Application
08/154,649, filed November 18, 1993, now U.S. Patent No.
5,478,051, issued December 26, 1995, which is a division of
Application 07/857,021, filed March 24, 1992, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DIETER MAUER
________________
Appeal No. 99-0165
Application 08/478,0701
________________
ON BRIEF
________________
Before FRANKFORT, STAAB and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Dieter Mauer appeals from the final rejection of claims
16 through 21, all of the claims pending in the application.
Appeal No. 99-0165
Application 08/478,070
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We reverse.
The invention relates to a conveying belt having a
plurality of components integrally connected thereto at spaced
intervals. The belt is used to sequentially present the
components at a manufacturing line assembly station where the
components are separated from the belt. Claim 16 is
illustrative and reads as follows:
16. An elongated belt for use in presenting portions
thereof at an assembly point in a manufacturing process
comprising:
an elongated thread member;
a plurality of guide elements arranged sequentially along
said member;
at least one positioning bore in each of said guide
elements for use in positioning said belt; and
a plurality of component parts, each of said component
parts being integrally connected to one of said guide elements
for sequential presentation to the assembly point;
said positioning bore in each of said guide elements
having a fixed spatial relationship to said connected
component part.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Erlichman 4,008,302 Feb. 15,
1977
Appeal No. 99-0165
Application 08/478,070
An English language translation of this reference,2
prepared on behalf of the Patent and Trademark Office, is
appended hereto.
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Suginaka 55-112735 Aug. 30,
1980
(Japanese Patent Document)2
The appealed claims stand rejected as follows:
a) claims 16, 17, 20 and 21 under 35 U.S.C. § 102(b) as
being anticipated by the Japanese reference;
b) claim 19 under 35 U.S.C. § 103 as being unpatentable
over the Japanese reference; and
c) claim 18 under 35 U.S.C. § 103 as being unpatentable
over the Japanese reference in view of Erlichman.
Reference is made to the appellant’s brief (Paper No. 10)
and to the examiner’s answer (Paper No. 11) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Turning first to the standing 35 U.S.C. § 102(b)
rejection of claims 16, 17, 20 and 21, the Japanese reference
discloses a belt-like member for sequentially presenting pairs
of complementary pinching (e.g., clothespin) pieces to an
Appeal No. 99-0165
Application 08/478,070
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assembly point in a manufacturing line where the components of
each pair are folded toward one another and separated from the
belt-like member. The belt-like member is an integrally
molded construction consisting of a central runner 2 and pairs
of complementary pinching pieces 1 connected to the central
runner at spaced intervals by base parts 3. As shown in
Figure 1, each of the pinching pieces has a slot adjacent its
outer end and what appears to be a bore adjacent its inner
end.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228
(1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed
by a person of ordinary skill in the field of the invention.
Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
The examiner has determined that the Japanese reference
discloses each and every element of the belt recited in
Appeal No. 99-0165
Application 08/478,070
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independent claim 16 in that
Japan ‘735 discloses an elongated belt,
comprising:
an elongated plastic thread member 2;
a plurality of plastic guide elements arranged
sequentially along the member, with each guide
element having a positioning bore (i.e. each guide
element is deemed to comprise 3 and that portion of
1 containing the bore but not the slot); and

a plurality of plastic component parts
integrally connected to the guide elements (i.e.
each component part is deemed to comprise that
portion of 1 containing the slot but not the bore),
wherein the positioning bore in each of the
guide elements has a fixed spatial relationship to
the connected component part [answer, page 3].
The appellant, on the other hand, persuasively argues
that the examiner’s finding of anticipation is unsound because
the Japanese reference does not meet the limitations in claim
16 requiring the claimed belt to comprise a plurality of guide
elements each having at least one positioning bore and a
plurality of component parts each integrally connected to one
of the guide elements (see pages 6 through 11 in the brief).
Arguably, a person of ordinary skill in the art would view
each Japanese base part 3 and pinching piece 1 as constituting
a guide element and component part, respectively. Such a
Appeal No. 99-0165
Application 08/478,070
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person, however, would not reasonably consider each Japanese
base part 3 and the portion of the adjacent pinching piece
containing the apparent bore to be a guide element and the
remainder of the pinching piece to be a component part as
urged by the examiner. This interpretation of the Japanese
“belt” is quite arbitrary and has no reasonable basis in the
disclosure of the reference.
Thus, the Japanese reference does not disclose each and
every element of the invention recited in independent claim
16. Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claim 16 or of claims 17, 20 and 21
which depend therefrom.
In addition to not disclosing a belt meeting the
foregoing limitations in claim 16, the Japanese reference,
taken alone or in combination with Erlichman, would not have
suggested same to one of ordinary skill in the art.
Therefore, we shall not sustain the standing 35 U.S.C. § 103
rejections of dependent claims 18 and 19.
The decision of the examiner is reversed.
REVERSED
Appeal No. 99-0165
Application 08/478,070
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CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 99-0165
Application 08/478,070
-8-
Edward D. Murphy
The Black and Decker Corporation
701 East Joppa Road
Towson, MD 21286
JPM/ki